Court ruling on GM's 'tasteless' use of shirtless Albert Einstein in ad

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UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES - GENERAL

Case No. CV10-03790 AHM (JCx) Date October 15, 2012

Title THE HEBREW UNIVERSITY OF JERUSALEM v. GENERAL MOTORS LLC

Present: TheHonorable

A. HOWARD MATZ, U.S. DISTRICT JUDGE

Stephen Montes Not Reported

Deputy Clerk Court Reporter / Recorder Tape No.

Attorneys NOT Present for Plaintiffs: Attorneys NOT Present for Defendants:

Proceedings: IN CHAMBERS (No Proceedings Held)

I. Introduction

Defendant General Motors LLC (“GM”) used an image of Albert Einstein in aNovember 2009 advertisement for its 2010 Terrain vehicle. The ad depicted Einstein’sface digitally pasted onto a muscled physique, accompanied by the written message“Ideas are sexy too.” The ad ran in only one issue of People magazine. Plaintiff HebrewUniversity of Jerusalem (“HUJ”), which claims to own Einstein’s right of publicity as abeneficiary under Einstein’s will and thus exclusive control of the exploitation of hisname and likeness, brought suit against GM for this unauthorized use of Einstein’simage.1

On March 16, 2012, the Court issued an order permitting HUJ to proceed to trial toattempt to prove (1) that Albert Einstein would have transferred his postmortem right ofpublicity under New Jersey law had he been aware that such a right of publicity existed at

1 Article 13 of Einstein’s will states: “I give and bequeath all of my manuscripts, copyrights,publication rights, royalties and royalty agreements, and all other literary property and rights, of any andevery kind or nature whatsoever, to my Trustees hereinafter named, IN TRUST, to hold the same for aterm measured by the lives of my secretary Helena Dukas, and my step-daughter, Margot Einstein....Upon the death of the said Helena Dukas and the said Margot Einstein, this trust shall terminate, andthereupon all funds or property, if any, still held in this trust, including all accrued, accumulated andundistributed income and all literary rights and property, shall pass and be distributed to HebrewUniversity....”

CV-90 (06/04) CIVIL MINUTES - GENERAL of 16

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the time of his death and (2) that GM had violated that right. See Hebrew Univ. ofJerusalem v. Gen. Motors LLC, 2012 WL 907497, at *12-14 (C.D. Cal. March 16,2012).2 GM has asserted that even if HUJ could prove both Einstein’s intent with respectto the right of publicity and GM’s violation of that right, it should not be entitled torecover damages because too much time elapsed between Einstein’s death in 1955 andthe filing of this lawsuit in 2010.

Now before the Court is HUJ’s motion3 requesting that the Court find that theduration of the postmortem right of publicity is indefinite under New Jersey common lawor, in the alternative, that it lasts for 70 years after death, as is the case with copyrightsunder the federal Copyright Act. In essence, HUJ seeks a ruling from this Californiafederal court as to what New Jersey’s highest court would likely determine to be thepostmortem duration of that state’s common law right of publicity.4 For the reasons setforth below, the Court concludes that the New Jersey Supreme Court would likely findthat the postmortem right of publicity endures for no more than 50 years after death. Asto HUJ’s cause of action under California’s right of publicity statute (Civil Code§3344.1), the Court also rules that the rights encompassed in that statute do not apply toPlaintiff.

II. Facts and Procedural History

The facts of this case are set forth in the Court’s summary judgment order, HebrewUniversity of Jerusalem v. General Motors LLC, 2012 WL 907497 (C.D. Cal. March 16,2012), and therefore only a brief review of the background is presented here.

2 In that order, the Court also granted summary judgment in favor of GM on HUJ’s causes ofaction under the Lanham Act (15 U.S.C. § 1125(a)) and California’s Unfair Competition Law, butdenied summary judgment on HUJ’s remaining claims based on California’s right of publicity statute(Civil Code § 3344.1) and New Jersey’s common law right of publicity.

3 Dkt. 154.

4 Given that New Jersey courts have not decided the duration of that state’s postmortem right ofpublicity, this Court is called on to “predict how the highest state court would decide the issue.” In reKekauoha-Alisa, 674 F.3d 1083, 1087-88 (9th Cir. 2012).


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Nothing in Albert Einstein’s will specifically mentioned any right of publicity, andduring his lifetime he did not claim or receive any monetary compensation for the use ofhis persona. Applying New Jersey law (because Einstein was domiciled there at the timeof his death in 1955), this Court concluded that New Jersey would recognize a commonlaw postmortem right of publicity without the requirement of lifetime exploitation. Id. at*6, 10. The Court therefore found that Einstein had a right of publicity that survived hisdeath, but that the remaining question—whether he would have intended to transfer thatright to HUJ through a provision in his will—was a factual question. Id. at *13-14. Forthat reason, the Court held, HUJ was entitled to prove Einstein’s intent at trial.

For the present motion, the Court assumes without deciding that HUJ succeeded inproving that Einstein would have intended to bequeath his right of publicity to HUJ. Thedispositive question now before the Court is the duration of that right. For how manyyears may HUJ enforce Einstein’s common law, postmortem right of publicity?

III. Legal Standard

Although HUJ has styled this motion as one for judgment as a matter of lawpursuant to Federal Rule of Civil Procedure 50(a), the Ninth Circuit has made clear thatRule 50(a) only applies after a jury trial has begun. See McSherry v. City of Long Beach,423 F.3d 1015, 1019-21 (9th Cir. 2005) (“We hold that the district court may not grant amotion filed under Rule 50 prior to the presentation of any evidence in a case.”). TheCourt therefore treats this motion as a motion for summary adjudication pursuant to Rule56. See id. at 1021 (treating improper Rule 50 motion as a motion for judgment on thepleadings); see also Fed. R. Civ. P. 12(d) (stating that when “matters outside thepleadings are presented to and not excluded by the court, the motion must be treated asone for summary judgment under Rule 56”); Fed. R. Civ. P. 56(a) (permitting summaryjudgment on “part of” a claim).

Federal Rule of Civil Procedure 56 provides for summary judgment when “themovant shows that there is no genuine dispute as to any material fact and the movant isentitled to judgment as a matter of law. ” The moving party bears the initial burden ofdemonstrating the absence of a “genuine issue of material fact for trial.” Anderson v.Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). A fact is material if it could affect the


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outcome of the suit under the governing substantive law. Id. at 248. The burden thenshifts to the nonmoving party to establish, beyond the pleadings, that there is a genuineissue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986).

For the limited purpose of this motion, there are no factual issues in dispute. Theparties agree that Einstein died while domiciled in New Jersey and that 55 years passedbetween his death in 1955 and 2010, when HUJ filed this lawsuit. The parties disagree asto whether the duration of the right of publicity extends as long as 55 years or evenlonger. This is a question that may properly be decided as a matter of law.

IV. Analysis

J. Thomas McCarthy, the leading commentator on the right of publicity, hascharacterized the determination of the right’s duration as “by nature almost arbitrary.” 2J. Thomas McCarthy, Rights of Publicity & Privacy § 9:16 (2d ed. 2012) (henceforth,“McCarthy”). An “almost arbitrary” ruling is unacceptable, however. The followinganalysis seeks to avoid one.

A. New Jersey Law Determines the Duration of the New Jersey Right of Publicity

The right of publicity is a property right under both New Jersey common law andCalifornia statutory law. McFarland v. Miller, 14 F.3d 912, 917 (3d Cir. 1994) (“In NewJersey, the right of publicity is a property right.”); Estate of Presley v. Russen, 513 F.Supp. 1339, 1355 (D.N.J. 1981) (holding that the right of publicity is descendible); Cal.Civ. Code § 3344.1(b) (“The rights recognized under this section are property rights,freely transferable or descendible . . . .”).

The duration of California’s statutory postmortem right of publicity is 70 years.Cal. Civ. Code § 3344.1(g). But the right is limited to California domiciliaries. See Cal.Civ. Code § 946 (“If there is no law to the contrary, in the place where personal propertyis situated, it is deemed to follow the person of its owner, and is governed by the law ofhis domicile.”); Cairns v. Franklin Mint Co., 292 F.3d 1139, 1147-49 (9th Cir. 2002)(concluding that § 946 applies in conjunction with § 3344.1 and that therefore the right of


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publicity provided by § 3344.1 does not apply to persons domiciled outside California,despite the statute’s applicability to acts occurring in California); see also Milton H.Greene Archives, Inc. v. Marilyn Monroe LLC, 692 F.3d 983, 1000 (9th Cir. 2012)(confirming that the law of the state where the deceased owner of the right of publicitywas domiciled controls whether the right may be posthumously enforced).

As previously noted, Einstein died while domiciled in New Jersey. HUJ’s claimpursuant to Cal. Civ. Code § 3344.1 therefore fails. For the same reason, unless soundpublic policy and the weight of authority establish otherwise, it makes no sense to applythe California statute’s 70 year postmortem durational limit—which is part and parcel ofthe substantive right—to a right arising solely out of the New Jersey common law, andthere is no legal principle requiring this Court to do so.5

B. Status of Existing New Jersey Law Concerning the Duration of thePostmortem Right of Publicity

5 HUJ argues that the judicially-created doctrine of “dépeçage” should apply to determine theduration of New Jersey’s postmortem right of publicity. Pursuant to that doctrine, courts “erect[] [a]framework under which different issues in a single case, arising out of a common nucleus of operativefacts, may be decided according to the substantive law of different states.” Putnam Res. v. Pateman,958 F.2d 448, 465 (1st Cir. 1992). In other words, a choice of law analysis may be applied to each issuein a case. HUJ argues that despite this Court having already determined the very existence of the rightof publicity under New Jersey law, the Court should apply dépeçage and determine the right’s durationpursuant to California law. The Court disagrees. Dépeçage is inappropriate because the existence andduration of the right of publicity are not separate issues. They are simply two aspects of the singlequestion before the Court—whether HUJ may enforce Einstein’s right of publicity. Moreover, it is clearfrom California and Ninth Circuit cases that there is no common law postmortem right of publicity inCalifornia and that California’s postmortem right of publicity statute does not apply to non-domiciliaries. See Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 391 (Cal. 2001)(discussing Lugosi v. Universal Pictures, 25 Cal. 3d 813 (Cal. 1979), which likened the common lawright of publicity to the right of privacy and held that it was not descendible). Thus, even if the Courtperformed a choice of law analysis pursuant to the dépeçage doctrine, there would be no applicableCalifornia law to apply. The Ninth Circuit’s recent decision in Milton H. Greene Archives, Inc. v.Marilyn Monroe LLC reinforces this conclusion. 692 F.3d 983, 986, 999-1000 (9th Cir. 2012)(confirming that California law does not govern the right of publicity of a personality who wasdomiciled outside California at the time of her death).


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Only one court in New Jersey, a federal district court, has ever discussed thequestion of duration, and it did not decide the issue. See Estate of Presley, 513 F. Supp.at 1355 n.10. The primary question in Presley was whether New Jersey recognized adescendible, postmortem right of publicity. The court found that it does, holding that“Elvis Presley’s right of publicity survived his death and became part of Presley’s estate.” Id. at 1354-55. With respect to the duration of the right of publicity, however, thePresley court merely stated that the state legislature should determine that question,although it also noted that the federal Copyright Act, which at that time provided for acopyright term of life plus 50 years, could provide guidance. Id. at 1355 n.10. No statecourt in New Jersey has ever addressed the issue.

Although the New Jersey Legislature has considered at least two bills that wouldcreate a statutory right of publicity, it has thus far not seen fit to enact such a right. SeeA.3536, 213th Legis. (N.J. 2008) (proposing the “Celebrity Image Protection Act,” with apostmortem duration of 70 years); A.4476, 212th Legis. (N.J. 2007) (same). There isnothing stopping HUJ from petitioning the New Jersey Legislature to pass a statute, withretroactive applicability, that would create a definitive postmortem right of publicity withthe extended duration that HUJ seeks here.

C. Aspects of the Right of Publicity that Should Affect Its Duration

1. The Right of Publicity’s Origins in the Right of Privacy

“The ‘right of publicity’ ‘signif[ies] the right of an individual, especially a publicfigure or a celebrity, to control the commercial value and exploitation of his name andpicture or likeness and to prevent others from unfairly appropriating this value forcommercial benefit.’” McFarland, 14 F.3d at 918-19 (interpreting New Jersey law andquoting Estate of Presley, 513 F. Supp. at 1353); see also McCarthy, § 1:3 (defining theright of publicity as “the inherent right of every human being to control the commercialuse of his or her identity”); Restatement (Third) of Unfair Competition § 46 cmt. d (“Theright of publicity protects the commercial value of a person’s identity.”)

The right of publicity originally developed within the array of privacy rights thatare considered personal, are based on dignitary interests and are not descendible. See


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Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757, 772 (D.N.J. 2011) (discussing the right’sorigins as one of four privacy-based torts proposed in a 1960 article by Dean WilliamProsser); see also McCarthy, § 9:6 (noting that privacy rights “die with the person”);William L. Prosser, Privacy, 48 Calif. L. Rev. 383 (1960).

Now, however, the right of publicity is widely understood, including in NewJersey, to be akin to intellectual property. Hart, 808 F. Supp. at 772 (citing Canessa v.J.I. Kislak, Inc., 235 A.2d 62, 76 (N.J. Super. Ct. Law Div. 1967)); see also McCarthy, §9:6 (noting that the right of publicity, like trademark and copyright, recognizes “legallyenforceable rights in the commercial value of intangible property”). Additionally, “[w]ithits emphasis on commercial interests, the right of publicity also secures for plaintiffs thecommercial value of their fame and prevents the unjust enrichment of others seeking toappropriate that value for themselves.” Restatement (Third) of Unfair Competition § 46cmt. c; see also Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 576 (1977) (“Therationale for (protecting the right of publicity) is the straightforward one of preventingunjust enrichment by the theft of good will. No social purpose is served by having thedefendant get free some aspect of the plaintiff that would have market value and forwhich he would normally pay.” (internal quotation marks and citation omitted)).

New Jersey has adopted the Restatement (Second) of Torts, including theplacement of its “common law privacy right of appropriation” in section 652C, which hasbeen treated by courts as equivalent to the right of publicity. See Hart, 808 F. Supp. 2d at772-773 (discussing Third Circuit’s interchangeable use of “right of publicity” and“appropriation” and observing that New Jersey courts have come to regard the right ofpublicity as a property right, not one for injury to the person); see also Tellado v. Time-Life Books, Inc., 643 F. Supp. 904, 907-08 (D.N.J. 1986) (citing Bisbee v. John C.Conover Agency, Inc., 452 A.2d 689 (N.J. Super. Ct. App. Div. 1982)). The AmericanLaw Institute also removed the discussion of the right of publicity from its sections onprivacy and placed it in the Restatement (Third) of Unfair Competition. See ETW Corp.v. Jireh Pub., Inc., 332 F.3d 915, 930 (6th Cir. 2003). Although New Jersey has notformally adopted the Restatement (Third) of Unfair Competition, Hart, 808 F. Supp. 2dat 791 n.37, its incorporation of the Second Restatement of Torts indicates that NewJersey courts’ analysis would likely align with that of the Third Restatement of UnfairCompetition, which notes that “‘courts may be properly reluctant to adopt a broad


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construction of the publicity right’” because of its “‘less compelling’” rationales thanthose of other intellectual property rights. See ETW Corp., 332 F.3d at 930-31 (quotingRestatement (Third) of Unfair Competition § 46 cmt. c and concluding for similarreasons that Ohio courts would be likely to follow the Third Restatement).

Notwithstanding the trend toward treating the right of publicity as a commercialproperty right, HUJ contends that the right of publicity is a deeply personal right. It istrue that one of the rationales for recognizing a right of publicity remains its protection of“an individual’s interest in personal dignity and autonomy.” Restatement (Third) ofUnfair Competition § 46 cmt. c. Surely, however, the personal interest that is at stakebecomes attenuated after the personality dies.

A maximum 50-year postmortem duration here would be a reasonable middleground that is long enough for a deceased celebrity’s heirs to take advantage of and reapthe benefit of the personal aspects of the right. See Restatement (Third) of UnfairCompetition § 46 cmt. h (“As a general matter, however, the dignitary and proprietaryinterests that support the recognition of a right of publicity become substantiallyattenuated after death. Postmortem uses are also less likely to create a false suggestion ofendorsement or sponsorship.”). The obviously humorous ad for the 2010 Terrain havingbeen published 55 years or more after Einstein’s death, it is unlikely that any viewer of itcould reasonably infer that Einstein or whoever succeeded to any right of publicity thatEinstein may have had was endorsing the GMC Terrain.

2. Copyright Law Considerations

HUJ argues that, if the Court must set a limit on the postmortem right of publicity,it should be coterminus with the current federal Copyright Act, which protects copyrightsfor 70 years after death. See 17 U.S.C. § 302. This Court disagrees. The purpose of theright and its underlying policies do not warrant a mechanical application of the CopyrightAct’s term of life plus 70 years. Indeed, although McCarthy ultimately recognizes thatusing the federal Copyright Act as a model will “[m]ore often than not . . . provide thetie-breaking solution to the problem” of determining the postmortem duration of the rightof publicity, McCarthy, § 9:16, it is clear that such an analogy is inconsistent withMcCarthy’s own views about the purpose and policies underlying the right. In fact, he


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would prefer to limit the extent of the right to 10-20 years after death, despite noting thatother commentators have proposed longer durations, including a life-plus-50-year termmodeled after the former version of the federal Copyright Act. Id.

The current 70-year postmortem term was enacted by the 1998 Copyright TermExtension Act, which increased the length of copyright protection from its formerduration of life plus 50 years. See Eldred, 537 U.S. at 193. HUJ acquired Einstein’sright of publicity in 1982, Hebrew Univ. of Jerusalem, 2012 WL 907497, at *3, at whichtime the 1976 Copyright Act was in place—with a 50-year postmortem duration. SeeEldred v. Ashcroft, 537 U.S. 186, 193 (2003). HUJ’s reasonable expectation at that time,based on the same theory of analogy to copyright that it advocates today, necessarilywould have been that any rights it acquired would not last more than 50 years afterEinstein’s death. Similarly, when the Presley court suggested that the New JerseyLegislature consider the Copyright Act as a guide in setting a postmortem duration for theright of publicity, that statute had only a life-plus-50-year duration. See Estate ofPresley, 513 F. Supp. at 1355 n.10. This was approximately one year before HUJacquired its interest.

There are certain similarities between the goals of copyright and those of the rightof publicity. In a sense, both rights evolve from an act of creation, whether it is thecreation of a “work” such as a writing or the creation of a cultivated persona. These actsof creation are the product of an individual’s choices and self-expression. Some courts,accordingly, have analogized between copyright and the right of publicity in the contextof balancing the interests protected by those rights with the interests protected under theFirst Amendment. See, e.g., Hart, 808 F. Supp. 2d at 776-77 (noting the “commonunderlying principles shared by the right of publicity and copyright doctrine”); Estate ofPresley, 513 F. Supp. at 1359 n.21 (describing Elvis’s likeness as an “original work”);see also Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 399 (Cal. 2001)(“The right of publicity, like copyright, protects a form of intellectual property thatsociety deems to have some social utility. Often considerable money, time and energyare needed to develop one’s prominence in a particular field. . . . For some, theinvestment may eventually create considerable commercial value in one’s identity.”);Zacchini, 433 U.S. at 576 (noting that a state’s interest in protecting the right of publicity“is closely analogous to the goals of patent and copyright law, focusing on the right of the


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individual to reap the reward of his endeavors and having little to do with protectingfeelings or reputation”).

Despite the intersecting similarities between copyright and the right of publicity,however, that the right of publicity is an outgrowth of the right of privacy suggests thatthe term of copyright protection is far from a perfect precedent for determining theduration of the right of publicity. First, as HUJ itself has argued, the right of publicity isan intensely personal right meant, to some extent, to protect against personal anddignitary harms, such as having one’s persona associated with a product or idea of whichhe disapproves. See Restatement (Third) of Unfair Competition § 46 cmt. c. Thus, “thefocus of copyright is on recorded creative expressions while the focus of the right ofpublicity is on the identity and ‘persona’ of a human being.” McCarthy, § 5:45; see alsoRestatement (Third) of Unfair Competition § 46 cmt. i (“[T]he subject matter of the rightof publicity generally lies outside the scope of copyright. Moreover, the protectionafforded by the right of publicity against the exploitation of a person’s identity forpurposes of trade is not ordinarily ‘equivalent’ to the rights against reproduction,distribution, performance, and display recognized under copyright.”).

Moreover, the protection of copyright is designed to encourage the future creationof works of art, whereas the interest sought to be protected by the right of publicity isusually the byproduct of a different and earlier endeavor. “The commercial value of aperson’s identity often results from success in endeavors such as entertainment or sportsthat offer their own substantial rewards. Any additional incentive attributable to the rightof publicity may have only marginal significance.” Restatement (Third) of UnfairCompetition § 46 cmt. c. For this reason, it is questionable whether those interests shouldbe protected for as long a period after the death of the person to whom they belong as arehis copyrighted works.

Finally, among the reasons for Congress’s 1998 extension of the federal CopyrightAct to protect works for life plus 70 years (increased from life plus 50 years) were thedesire to harmonize U.S. copyright protection with the protection afforded by countries inthe European Union, see Eldred, 537 U.S. at 205-06, and, arguably, to promote theinterests of the American entertainment industry, see id. at 262 (Breyer, J., dissenting). These political and economic considerations are distinct from those policies underlying


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copyright protection that also support a right of publicity. As such, they point away froma mechanical application of the extremely lengthy, 70-year postmortem duration ofcopyright to the right of publicity.

D. Other States’ Laws

1. Common Law

Looking beyond New Jersey, in none of the five other states that recognize acommon law postmortem right of publicity has any court addressed the issue of theright’s duration, or even raised it as a question needing to be answered. See, e.g.,Gignilliat v. Gignilliat, Savitz & Bettis, L.L.P., 684 S.E.2d 756, 758 (S.C. 2009) (SouthCarolina); Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 304-06 (6th Cir. 2001) (Michigan); Jim Henson Prods., Inc. v. John T. Brady & Assocs., Inc.,867 F. Supp. 175 (S.D.N.Y. 1994) (Connecticut); Nature’s Way Prods., Inc. v. Nature-Pharma, Inc., 736 F.Supp. 245, 247 (D. Utah 1990) (Utah); Martin Luther King, Jr., Ctr.for Social Change, Inc. v. Am. Heritage Prods., Inc., 296 S.E.2d 697, 698 (Ga. 1982)(Georgia). In none of those cases, however, was the interval between the death of theperson whose right of publicity was at stake and the date of the alleged infringement ofthat right 50 years or longer. Indeed, in most of the cases the period was 10 years or less. See, e.g., Gignilliat, 684 S.E.2d at 758 (maximum of 7 years at issue); Jim HensonProds., Inc., 867 F. Supp. 175 (maximum of 4 years at issue); Nature’s Way Prods., Inc., 736 F.Supp. at 247(maximum of 7 years at issue); see also Estate of Presley, 513 F.Supp. at 1355 (permitting right of publicity claim brought three years after Elvis’s death).

2. Statutes

The majority of states with statutory rights of publicity limit the right’spostmortem duration to 50 years or less. Seven states have statutory rights of publicitythat permit the right to endure for up to 50 years. See Fla. Stat. Ann. § 540.08 (Florida;40 years); 765 Ill. Comp. Stat. § 1075/30 (Illinois; 50 years); Ky. Rev. Stat. § 391.170(Kentucky; 50 years): Nev. Rev. Stat. § 597.790 (Nevada; 50 years); 42 Pa. C.S.A. §8316 (Pennsylvania; 30 years); Tex. Prop. Code Ann. § 26.012 (Texas; 50 years); Va.Code Ann. § 8.01-40 (Virginia; 20 years).


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Six states allow the postmortem right of publicity to reach 60 years or more. SeeCal. Civ. Code § 3344.1 (California; 70 years); Ind. Code Ann. § 32-36-1-8 (Indiana; 100years); Ohio Rev. Code Ann. § 2741.02 (Ohio; 60 years): 12 Okla. Stat. Ann. § 1448(Oklahoma; 100 years); see also Tenn. Code Ann. §§ 47-25-1102 to -1104 (Tennessee;indefinite as long as the persona has commercial value); Wash. Rev. Code Ann. §§63.60.010 to 63.60.040 (Washington; 75 years when the persona has commercial value).6

Of the states whose statutes were enacted prior to the revision of the Copyright Actin 1998, only California amended its statute to reflect the extended copyright term. SeeCalifornia Assembly Committee on Judiciary, SB 209 (March 3, 1999) (noting theCalifornia Assembly’s express intent to conform its right of publicity statute to theamended federal Copyright Act).

Thus, of the states with currently enacted statutory rights of publicity, a slightmajority limits the duration of that right to 50 years or less. Although this does notprovide overwhelming support for such a length of time, it does tip the balance slightly inthat direction.

E. Public Policy Counsels in Favor of Limiting the Postmortem Right ofPublicity to Not More Than 50 Years

One of the overarching policy concerns in enforcing intellectual property rights isthe balance that must be struck between protecting an individual’s right to reap thebenefits of his creative endeavors and the public’s freedom of expression. See White v.Samsung Elecs. Am., Inc., 989 F.2d 1512, 1519 (9th Cir. 1993) (Kozinski, J., dissenting)(“[I]ntellectual property law is full of careful balances between what’s set aside for theowner and what’s left in the public domain . . . .”). This policy concern extends to theright of publicity. See id.; Hart, 808 F. Supp. 2d at 774 (noting that “it is clear that the

6 One state, Nebraska, has a statutory postmortem right of publicity that does not appear toestablish a duration. See Neb. Rev. Stat. §§ 20-202, 20-208. Additionally, the MassachusettsLegislature is currently considering a bill that would create a statutory postmortem right of publicity inthat state with a duration of life plus 70 years. See Mass. Bill S.2382; Leon Neyfakh, Life, theAftermarket, Boston Globe, Aug. 19, 2012, at K1.


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right of publicity may encroach upon First Amendment rights” and discussing the variousbalancing tests used by courts to weigh those rights); Restatement (Third) of UnfairCompetition § 47 cmt. c (“The right of publicity as recognized by statute and commonlaw is fundamentally constrained by the public and constitutional interest in freedom ofexpression.”).

An open-ended right of publicity, or even a postmortem duration longer than 50years, raises considerable First Amendment concerns and creates a potentially infinitecurb on expression. See White, 989 F.2d at 1513 (Kozinski, J., dissenting)(“Overprotecting intellectual property is as harmful as underprotecting it. Creativity isimpossible without a rich public domain. . . . Overprotection stifles the very creativeforces it’s supposed to nurture.”); Comedy III Prods., 25 Cal. 4th at 397 (“[T]he veryimportance of celebrities in society means that the right of publicity has the potential ofcensoring significant expression by suppressing alternative versions of celebrity imagesthat are iconoclastic, irreverent, or otherwise attempt to redefine the celebrity’smeaning.”). Additionally, as the Ninth Circuit recently noted, an extended right ofpublicity may interfere with or decrease the value of copyrighted works, such asphotographs, thereby pitting one form of protected property against another. See MiltonH. Greene Archives, 692 F.3d at 1000.

New Jersey courts’ treatment of the First Amendment implications of the right ofpublicity is indicative of how that state’s highest court might decide the issue of theright’s duration. Many of those courts have applied a balancing test in their efforts toprotect First Amendment values while determining the reach of the right of publicity. SeeHart, 808 F. Supp. 2d at 767, 774-776 (collecting New Jersey cases, but noting, however,that “the Supreme Court in Zacchini, the only Supreme Court case addressing a FirstAmendment defense to the right of publicity did not engage in a balancing of thecompeting interests”); Tellado, 643 F. Supp. at 908-09 (collecting New Jersey cases); seealso G.D. v. Kenny, 15 A.3d 300, 321-22 (N.J. 2011) (denying claim for misappropriationof name and image based on First Amendment protection of political, as opposed to


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commercial, speech);7 Elga A. Goodman, et al., 49 N.J. Prac., Business Law Deskbook §16:3 (2011-2012 ed.) (“New Jersey recognizes a robust First Amendment constitutionaldefense to right of publicity claims.”). Given that lower New Jersey courts apply abalancing test to the treatment of the First Amendment interests implicated by the right ofpublicity, it is likely that the New Jersey Supreme Court would perceive pitfalls inallowing an unlimited or lengthy term to the right of publicity, and that it would be likelyto strike a similar balance if confronted with the question of the postmortem duration ofthat right.

In addition to First Amendment implications, there is another consideration. In the57 years since Albert Einstein died, the means of communication have increased and sohas the proclivity of people to use them frequently. Journalists, academics andpoliticians frequently issue pronouncements about the impact on society, both in theUnited States and around the globe, of the dizzying explosion in the tools ofcommunication. New devices and platforms have been developed, including smartphones, personal computers, social networks, email, Twitter, blogs, etc. Thesetechnologies have caused a swift and dramatic, but still developing, impact on ordinarylife. It has become a truism that their speed, their accessibility, and their popularityappear to have changed social norms regarding privacy and public expression. But it isnot yet clear what this should mean for the protection of such rights as the right ofprivacy, the right of expression and the right of publicity. For example, on balanceshould the law increasingly protect people’s right of expression, now that we enjoy somany fora in which to broadcast our views? Similarly, should the law value the right ofprivacy less than before, given that many social media devotees, especially young people,are said to have little compunction about revealing intimate information aboutthemselves? Conversely, should the law afford celebrities greater rights in controllingpublicity about themselves, to protect against what appears to be a growing tendency ofpeople to not just exalt but even to exploit the fame and celebrity of others?

The Court does not profess to have answers to these questions, but what is clear is

7 It is nevertheless indisputable that commercial speech—like GM’s ad here—also is protected tosome extent by the First Amendment. See Central Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n ofNew York, 447 U.S. 557, 561-62 (1980).


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that since the full impact of these rapid changes remains uncertain, it would be imprudentto issue any ruling that strengthens (or at least lengthens) one right—that of the right ofpublicity—to the potentially significant detriment of these other rights.

V. Conclusion

Absent a legislative directive to the contrary, to extend the right of publicitybeyond a half century would be inconsistent with the Court’s responsibility to balance allof the interests that are at stake. It also would risk having that right treated as an open-ended heredity right. See McCarthy, § 9:16 (noting the need “to avoid descendants orheirs unto the nth generation reaping the commercial rewards of a distant and famousancestor, a ‘favored bloodline’ concept out of step with a society that has abolishedhereditary titles” and that at some point, the interests of free speech outweigh the interestsof the heirs and “the person’s identity should enter the public domain as a part of historyand folklore”).

A maximum duration of 50 years appropriately reflects the balance betweenmeaningful enforcement of the right of publicity after a famous individual’s death and thepublic’s interest in free expression. It aligns with the majority of current state statuteslimiting the right’s postmortem duration. And it approximates the period evidentlycontemplated by the Presley court—the one court in New Jersey to have discussed theduration of the right—when it encouraged that state’s legislature to consider the issuewith guidance from the then-current Copyright Act.

The Ninth Circuit recently noted that Marilyn Monroe considered herself to belong“to the Public and to the world.” Milton H. Greene Archives, 692 F.3d at 1000. There isno evidence that Albert Einstein saw himself that way, but he did become the symbol andembodiment of genius. His persona has become thoroughly ingrained in our culturalheritage. Now, nearly 60 years after his death, that persona should be freely available tothose who seek to appropriate it as part of their own expression, even in tasteless ads.

Accordingly, the Court DENIES HUJ’s motion and rules that under New Jerseylaw, 2005 was the last year during which HUJ could sue to enforce any right of publicitythat it might have inherited from Albert Einstein. Because this case was not filed until


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2010, HUJ is not entitled to pursue it further. There will be no trial.

By not later than October 22, 2012, GM must file a “[Proposed] Judgment” inaccordance with this ruling.

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Court ruling on GM's 'tasteless' use of shirtless Albert Einstein in ad

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